Nokia and Lenovo conclude patent cross-licensing agreement
20 April 2021
On April 7, 2021, Nokia announced that it has concluded a multi-year, multi-technology patent cross-license agreement with Lenovo. Under the agreement, Lenovo will make a net balancing payment to Nokia. The terms of the agreement remain confidential. The agreement resolves all pending patent litigation and other proceedings between the two parties, in all jurisdictions.
Nokia’s industry-leading patent portfolio is built on more than €129 billion (US$153 billion) invested in research and development over the past two decades and is composed of around 20,000 patent families, including over 3,500 patent families declared essential to 5G.
In addition to its leadership in cellular standards, Nokia has also contributed significantly to multimedia and video research and the development of industry standards over the course of more than 30 years.
Nokia contributes these and other inventions to open standards in return for the right to license them on fair, reasonable and non-discriminatory terms. Companies can license and use these technologies without the need to make their own substantial investments in R&D.
“Nokia initiated litigation against Lenovo in 2019, and asserted 20 video-compression technology patents. The litigation included cases filed in the United States, Brazil, India and Germany. Lenovo had also sued Nokia for breach of contract over the alleged failure to disclose those video compression patent rights in the US. In September of 2020, a German court ruled that Lenovo had infringed one of Nokia’s patents, and ordered an injunction and product recall, although that order was stayed by the appeals court,” says Christopher Rourk, a partner at Jackson Walker in Dallas. “It is possible that the injunction factored into the settlement decision, and that the parties might not have settled the litigation if an injunction was not a factor. However, it is not uncommon for such matters to be resolved through a settlement and patent portfolio license prior to a verdict being rendered, with net payments going to the party with the stronger portfolio position.”
“The Nokia website refers to a study by IPlytics, an IP intelligence tool that enables the analysis of technology landscapes by providing access to patents, SEPs, standards, literature, etc, that summarizes various metrics regarding 5G patents. For example, the study lists the top companies that have declared patents with the European Telecommunications Standards Institute that were marked as 5G technology. That list shows that Nokia leads many companies in the number of declared patents. For example, for 5G EPO/USPTO granted and active families, Nokia has the largest share at 15.29 percent, while companies with less than one percent include Xiaomi, Intel, Lenovo and NEC,” Rourk says. “Although that data is only one facet of the overall technology picture, it does suggest that companies with a smaller share might be approached to license patents from companies with a larger share.”